Notice of Opposition Opposer Information Applicant Information
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1060575 Filing date: 06/08/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information
Name Lotto Sport Italia S.p.A. Granted to Date 06/07/2020 of previous ex- tension Address VIA MONTEBELLUNA 5/7 TREVIGNANO (TV), 31040 ITALY
Attorney informa- JAMES J. BITETTO tion TUTUNJIAN & BITETTO, P.C. 401 BROADHOLLOW ROAD, SUITE 402 MELVILLE, NY 11747 UNITED STATES [email protected], [email protected] 6318440080
Applicant Information
Application No 88235696 Publication date 12/10/2019 Opposition Filing 06/08/2020 Opposition Peri- 06/07/2020 Date od Ends Applicant Linq3 Technologies LLC One Buckhead Plaza 3060 Peachtree Rd. NW, Suite 1500 Atlanta, GA 30305 UNITED STATES Goods/Services Affected by Opposition
Class 035. First Use: 0 First Use In Commerce: 0 Opposed goods and services in the class: Marketing, advertising and promotion services; promoting the goods and servicesof others via computer and communication networks; providing an online plat- formfor sellers to promote their goods and services; Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition
U.S. Registration 2347644 Application Date 05/11/1998 No. Registration Date 05/02/2000 Foreign Priority NONE Date Word Mark LOTTO Design Mark
Description of NONE Mark Goods/Services Class 025. First use: First Use: 1974/09/16 First Use In Commerce: 1975/10/28 PULLOVERS, GLOVES, CARDIGANS, JERSEYS, NECKWEAR, SWEATERS, SOCKS, STOCKINGS, TOPS, TIGHTS, TROUSERS, LEGGINGS, SKIRTS, JACKETS, JERKINS, SHIRTS, VESTS, WAISTCOATS, JUMPERS, TRACK SUITS, BLOUSES, BLOUSONS, JEANS, SWEAT PANTS, GYM SUITS, KNICKERS, PANTS, SHORTS, T-SHIRTS, SWEAT-SHIRTS, SUITS AND DRESSES, OVERCOATS, COATS, ANORAKS, RAINCOATS, BELTS, SUS- PENDERS, LOUNGEWEAR, UNDER-WEAR, BEACHWEAR, SLEEPWEAR, FOOTWEAR, HEADWEAR
U.S. Registration 4148339 Application Date 02/16/2011 No. Registration Date 05/29/2012 Foreign Priority 08/17/2010 Date Word Mark LOTTO Design Mark
Description of The mark consists of the stylized word "LOTTO" surrounded by a rectangle ap- Mark pearing to the right of two vertically connected chevrons surrounded by a square. Inbetween the vertically connected chevrons is the shape of a diamond. Goods/Services Class 018. First use: First Use: 0 First Use In Commerce: 0 [ Leather and imitation leather; ] goods made of leather and imitation leather not included in other classes, namely, bags, handbags, carry - all bags, sport bags, shoulder bags, backpacks, travel bags, duffel bags, trunks, suit bags, carriers for suits, shirts and dresses, souvenir bags, clutch bags, key cases, book bags, cosmetic bags sold empty, rucksacks, briefcases and attaché cases, wheeled- bags, wallets, pocket wallets, card wallets, document cases, business card cases, calling card cases, credit card cases, name card cases, purses, coin purses; [ animal skins and hides; ] trunks and traveling bags; umbrellas, [ para- sols andwalking stick handles; whips, harnessesand saddlery ] Class 025. First use: First Use: 0 First Use In Commerce: 0 Clothing, namely, shirts, body shirts, tank shirts, camp shirts, dress shirts, sweatshirts, t-shirts, knit shirts, long-sleeved shirts, short-sleeved shirts, mois- ture-wicking sports shirts, polo shirts, shirts for suits, sports shirts, wind shirts, pants, padded pants, gym pants, jogging pants, lounge pants, sports pants, moisture-wicking sports pants, petti-pants, stretch pants, sweat pants, tappants, track pants, wind pants, Bermudashorts, jackets, men's and women's jackets, outer jackets, padded jackets, sleeved or sleeveless jackets, sports jackets, sweat jackets, waterproof jackets, wind-jackets, athletic uniforms, coats, trousers, vests, skirts, dresses, jumpers,socks, stockings, tights, ties, under- wear, pajamas, bathing suits, swim trunks,gloves, footwear, headgear, namely, hats, caps, caps with visors, bandannas, head scarves, sun visors, berets Class 028. First use: First Use: 0 First Use In Commerce: 0 [ Games and playthings, namely, marionettes, dolls, toy model trains, toy mo- biles, playing cards, dominoes, rocking horses, musical toys; ] Gymnastic and sporting articles not included in other classes, namely, gymnastic apparatus, shin guards for athletic use, soccer shin guards; sports balls, namely, footballs, paddleballs, lacrosse balls, racket balls, squash balls, soccer balls, basket balls,volley balls, tennis balls, golf balls,rugby balls, cricket balls, rubber balls, table tennis balls, tennis rackets, table tennis bats; tennis racket covers, squash, tennis and table tennis racket paddles, table tennis paddles, knee guards for athletic use, football gloves, golf gloves, baseball gloves; Bowling gloves, Hand- ball gloves; Hockey gloves; chestprotectors for sports; football or soccer goals, soccer goal nets, soccer ball knee pads; [ skis; water skis, golf clubs; decora- tions for Christmas trees not including confectionery and illumination articles ] Class 035. First use: First Use: 0 First Use In Commerce: 0 Retail and wholesale store services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, [ perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, ] sports glasses, [ frames, spectacle cases, ] life-saving and protective clothing and footwear, pro- tective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, [ articles of paper, stationary, ]gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Online wholesale and retail store services featuring clothing, sport clothing,footwear, sport footwear, headgear, [ belts, ][ perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life- saving and protective clothing and footwear, protective helmets for the practice ofsports, luggage, ] rucksacks, bags and traveling bags for sports, bags for sports articles, [ articles of paper, stationary, ] gymnastic and sports equipment, ball for playing sports, shin guards, [ knee guards and ] gloves for the practice of sports; On-line ordering services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, [ perfumes, cosmetics, soaps, wristwatchesand pocket watches, glasses, sunglassesand reading glasses, ] sports glasses, [ frames, spectacle cases, ] life-savingand protective clothing and footwear, pro- tective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, [ articles of paper, stationary,] gymnast- ic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Mail order services featuring clothing, sport clothing, footwear, sport footwear, headgear, [ belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectaclecases, life-saving and protective clothing and footwear, protective helmets forthe practice of sports, luggage, ] rucksacks, bags and traveling bags for sports, bags for sports articles, [articles of paper, stationary, ] gymnastic and sports equipment, ball for playing sports, shin guards, [ knee guards and ]gloves for the practice of sports; Catalog order- ing service featuring clothing, sport clothing, footwear, sport footwear, headgear, [ belts, perfumes, cosmetics, soaps,wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life- saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, ] rucksacks, bags and traveling bags for sports, bags for sports articles, [ articles of paper, stationary, ] gymnastic and sports equipment, ball for playing sports, shin guards, [ knee guards and ]gloves for the practice of sports Attachments 75482935#TMSN.png( bytes ) 79096741#TMSN.png( bytes ) 374-626 - Notice of Opposition.pdf(165165 bytes )
Signature /Susan Paik/ Name Susan Paik Date 06/08/2020 Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ______
Lotto Sport Italia, S.p.A.,
Opposer, Opposition No.: [TBD] v. Serial No.: 88/235,696 Mark: LOTTO.FUN Published: December 10, 2019 Linq3 Technologies LLC
Applicant.
______Trademark Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1451 Alexandria, VA 22313-1451
Notice of Opposition
Lotto Sport Italia, S.p.A. (“Opposer”), a Joint Stock Company organized and existing under the laws of Italy, and having a principal place of business at Via Montebelluna 5/7, Trevignano (TV) 31040 ITALY, believes that it will damaged by, and hereby opposes, the grant of the application of Linq3 Technologies LLC (“Applicant”), a Limited Liability Company of Delaware at One Buckhead Plaza, 3060 Peachtree Rd. NW, Suite 1500, Atlanta, Georgia 30305, to register the mark “LOTTO.FUN” (Word mark) shown in the application Serial Number 88/235,696 filed December 19, 2018 for “Marketing, advertising and promotion services; promoting the goods and services of others via computer and communication networks; providing an online platform for sellers to promote their goods and services” in International Class 035. Pursuant to 15 U.S.C. Section 1052, by and through its attorneys, Opposer hereby opposes the same.
1. By the application Serial No. 88/235,696 herein opposed, Applicant is seeking to obtain registration on the Principal Register of “LOTTO.FUN” (Word mark) (hereinafter “Applicant’s ‘696 mark”) for services in class 035, and particularly, for “Marketing, advertising and
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Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
promotion services; promoting the goods and services of others via computer and communication networks; providing an online platform for sellers to promote their goods and services” in International Class 035.
2. Applicant’s application Serial No. 88/235,696 for “LOTTO.FUN” (Word mark) is a 1(a) basis application filed on December 19, 2018 and such mark was published for opposition on December 10, 2019. Opposer timely filed a request for a 90 day extension of time to file an opposition with the Trademark Trial and Appeal Board on December 30, 2019, which was duly granted by the Board and extended the deadline to oppose to April 8, 2020. On April 7, 2020, Opposer timely filed a request for a 60 day extension of time to file an opposition, which was duly granted by the Board. This Notice of Opposition is timely filed.
3. Opposer is the owner of at least the following federal trademark registrations: a. No. 2,347,644 (hereinafter “Lotto ‘644 Registration”), registered on the Principal Register on May 2, 2000 for the trademark “LOTTO” for:
i. “PULLOVERS, GLOVES, CARDIGANS, JERSEYS, NECKWEAR, SWEATERS, SOCKS, STOCKINGS, TOPS, TIGHTS, TROUSERS, LEGGINGS, SKIRTS, JACKETS, JERKINS, SHIRTS, VESTS, WAISTCOATS, JUMPERS, TRACK SUITS, BLOUSES, BLOUSONS, JEANS, SWEAT PANTS, GYM SUITS, KNICKERS, PANTS, SHORTS, T-SHIRTS, SWEAT-SHIRTS, SUITS AND DRESSES, OVERCOATS, COATS, ANORAKS, RAINCOATS, BELTS, SUSPENDERS, LOUNGEWEAR, UNDER-WEAR, BEACHWEAR,
SLEEPWEAR, FOOTWEAR, HEADWEAR” in International Class 025;
b. No. 4,148,339 (hereinafter “Lotto ‘339 Registration”), registered on the Principal Register on May 29, 2012 for the trademark “LOTTO” (Design mark) for:
i. “Leather and imitation leather; goods made of leather and imitation leather not included in other classes, namely, bags, handbags, carry - all bags, sport bags, shoulder bags, backpacks, travel bags, duffel bags, trunks, suit bags, carriers for suits, shirts and dresses, souvenir bags, clutch bags, key cases, book bags, cosmetic bags sold empty, rucksacks, briefcases and attaché cases, wheeled bags, wallets, pocket wallets, card wallets, document cases, business card
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Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
cases, calling card cases, credit card cases, name card cases, purses, coin purses; animal skins and hides; trunks and traveling bags; umbrellas, parasols and walking stick handles; whips, harnesses and saddlery” in International Class 018;
ii. “Clothing, namely, shirts, body shirts, tank shirts, camp shirts, dress shirts, sweatshirts, t-shirts, knit shirts, long-sleeved shirts, short-sleeved shirts, moisture-wicking sports shirts, polo shirts, shirts for suits, sports shirts, wind shirts, pants, padded pants, gym pants, jogging pants, lounge pants, sports pants, moisture-wicking sports pants, petti-pants, stretch pants, sweat pants, tap pants, track pants, wind pants, Bermuda shorts, jackets, men's and women's jackets, outer jackets, padded jackets, sleeved or sleeveless jackets, sports jackets, sweat jackets, waterproof jackets, wind-jackets, athletic uniforms, coats, trousers, vests, skirts, dresses, jumpers, socks, stockings, tights, ties, underwear, pajamas, bathing suits, swim trunks, gloves, footwear, headgear, namely, hats, caps, caps with visors, bandannas, head scarves, sun visors,
berets” in International Class 025;
iii. “Games and playthings, namely, marionettes, dolls, toy model trains, toy mobiles, playing cards, dominoes, rocking horses, musical toys; Gymnastic and sporting articles not included in other classes, namely, gymnastic apparatus, shin guards for athletic use, soccer shin guards; sports balls, namely, footballs, paddleballs, lacrosse balls, racket balls, squash balls, soccer balls, basket balls, volley balls, tennis balls, golf balls, rugby balls, cricket balls, rubber balls, table tennis balls, tennis rackets, table tennis bats; tennis racket covers, squash, tennis and table tennis racket paddles, table tennis paddles, knee guards for athletic use, football gloves, golf gloves, baseball gloves; Bowling gloves, Handball gloves; Hockey gloves; chest protectors for sports; football or soccer goals, soccer goal nets, soccer ball knee pads; skis; water skis, golf clubs; decorations for Christmas
trees not including confectionery and illumination articles “ in International Class 028; and
iv. “Retail and wholesale store services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, articles of paper, stationary, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Online wholesale and retail store services featuring clothing, sport clothing, footwear, sport footwear, headgear, 3
Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life- saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, articles of paper, stationary, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; On-line ordering services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, articles of paper, stationary, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Mail order services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, articles of paper, stationary, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Catalog ordering service featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, perfumes, cosmetics, soaps, wristwatches and pocket watches, glasses, sunglasses and reading glasses, sports glasses, frames, spectacle cases, life- saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, articles of paper, stationary, gymnastic and sports equipment, ball for
playing sports, shin guards, knee guards and gloves for the practice of sports” in International Class 035. c. The Opposer’s Lotto ‘339 Registration is a Design mark and appears below:
4. Opposer’s LOTTO ‘644 Registration and LOTTO ‘339 Registration listed above 4
Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
have not been cancelled, are valid, and are currently in full force and effect.
5. The Opposer has been continuously and prominently using its “LOTTO” word and Design trademarks in connection with the goods and services listed in its registrations and has been actively promoting and expanding its use of the marks.
6. As a result of the prior prominent, longtime and widespread use in commerce by the Opposer of the aforesaid “LOTTO” word and Design trademarks in connection with its respective goods and services, the marks have acquired extensive goodwill, have developed a high degree of distinctiveness, are assets of the Opposer, and are well known and recognized as identifying at least the listed goods and services which have their origin with or have been authorized by the Opposer. In addition, Opposer’s “LOTTO” word and Design trademarks have reached the good reputation they enjoy, long prior to the filing date of Applicant’s ‘696 mark.
7. Opposer has priority with respect to the mark at issue in this Opposition. Opposer adopted and commenced use of its “LOTTO” word and Design marks as trademarks long before Applicant filed its application for its ‘696 mark. In particular, at least the mark in Opposer’s LOTTO ‘644 Registration was first used in commerce over 40 years ago, at least as early as September 16, 1974.
8. Applicant’s mark “LOTTO.FUN” is confusingly and deceptively similar to Opposer’s previously used and duly registered “LOTTO” word and Design marks at least in sight, sound and/or commercial impression.
9. In particular, Applicant’s “LOTTO.FUN” mark is highly similar to the Opposer’s “LOTTO” marks, and wholly incorporates the Opposer’s mark “LOTTO” in its entirety, with the only difference being the added term “.FUN” after the term “LOTTO”.
10. At least the Applicant’s services of “Marketing, advertising and promotion services;
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Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
promoting the goods and services of others via computer and communication networks; providing an online platform for sellers to promote their goods and services” in Class 035 encompass and/or overlap the goods and/or services provided in connection with Opposer’s “LOTTO” word and Design trademarks, and such goods/services would travel and/or be promoted through the same channels of trade, marketing and/or advertising to be provided to and/or used by, the same class of purchasers/clients.
11. Due to the similarities between Applicant’s mark and Opposer’s previously used and duly registered “LOTTO” word and Design trademarks, and in view of their identical Class 035 designation and overlapping goods and/or services therein, Applicant’s mark “LOTTO.FUN” is likely to cause confusion, mistake or deception as to the source of origin of Applicant’s goods and/or services in that the public, the trade and others are likely to believe that Applicant’s goods and/or services are: (a) the same goods and/or services as Opposer’s and/or (b) endorsed, provided, sponsored, approved, licensed by, affiliated with or in some other way legitimately connected to Opposer and/or its goods, licensed products and/or services.
12. Thus, the use and registration of the Applicant’s ‘696 mark for “LOTTO.FUN” for at least the services of “Marketing, advertising and promotion services; promoting the goods and services of others via computer and communication networks; providing an online platform for sellers to promote their goods and services” in Class 035 is likely to cause confusion or to cause mistake or deception in the trade and among purchasers/users and potential purchasers/users with Opposer’s previously used and duly registered “LOTTO” word and Design trademarks, causing damage to Opposer.
13. The use and registration of the Applicant’s ‘696 mark for the “LOTTO.FUN” mark is likely to dilute the distinctive quality of Opposer’s “LOTTO” word and Design trademarks, again causing damage to Opposer.
14. Registration of the mark shown in the Application Serial No. 88/235,696 will result in damage to Opposer under at least the provisions of Section 2(d) of United States Trademark Act, 15 U.S.C. 1052(d), pursuant to the allegations stated above. 6
Attorney Docket: 374-626 Opposition Mark: LOTTO.FUN
WHEREFORE, Opposer respectfully requests that the Opposition be sustained and Application Serial Number 88/235,696 be refused registration.
Accompanying this Notice of Opposition is the required fee of $400.00.
Respectfully submitted, Dated: June 8, 2020 LOTTO SPORT ITALIA, S.p.A.
By its attorneys,
/Susan Paik/ ______Susan Paik, Esq. James J. Bitetto, Esq. TUTUNJIAN & BITETTO, P.C. 401 Broadhollow Road, Suite 402 Melville, NY 11747 Tel: (631) 844-0080 Fax: (631) 844-0081 Email: [email protected]
ATTORNEY(S) FOR OPPOSER
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